Tuesday, January 26, 2016

The Top Ten TTAB Decisions of 2015 [Part 1]

Yours truly, the TTABlogger, has once again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (here, 2015). This is the first of two posts, the first five selections being set out below. Additional commentary on each case may be found at the linked TTABlog posting]. The cases are not necessarily listed in order of importance (whatever that means).

The Board of Trustees of The University of Alabama and Paul W. Bryant, Jr. v. William Pitts, Jr. and Christopher Blackburn, 115 USPQ2d 1099 (TTAB 2015) [precedential] [TTABlogged here]. [VACATED on March 3, 2016]. An augmented Board panel denied the opposers’ request to reopen, vacate, and dismiss without prejudice the TTAB’s 2013 precedential decision (here), dismissing an opposition to registration of the mark HOUNDSTOOTH MAFIA, in the design form shown below, for “shirts, hats.” A subsequent civil action under Section 21(b)(1) of the Trademark Act for review of the TTAB’s decision resulted in settlement and entry of a consent judgment, which in part ordered that the Board’s decision be vacated. In settling the case, the parties submitted to the court a Final Consent Judgment, which would result in assignment to the University of applicants’ rights in the HOUNDSTOOTH MAFIA mark, including the opposed application. The parties agreed that the Board’s Order should be vacated. The Board, however, concluding that 28 U.S.C. Section 2106 was not implicated and, noting that Rule 60(b) was not invoked, ruled that Section 21(b)(1) did not require vacatur. The Board then considered the matter in view of its "general equitable authority." It saw no exceptional circumstances or any public interest that would require vacatur. The decision was deemed precedential in order to provide guidance to practitioners. The consent judgment did not point to any error in the Board's decision, and nothing suggested a public interest that would be advanced by vacatur and that would outweigh the Board’s determination that the decision had precedential value. [On February 23, 2016, the U.S. District Court for the Northern District of Alabama ordered that the original TTAB decision be vacated, in accord with a consent judgment entered in the civil action seeking review of the Board's decision].

New York Yankees Partnership v. IET Products and Services, Inc., 114 USPQ2d 1497 (TTAB 2015) [precedential]. [TTABlogged here]. An augmented panel sustained an opposition to registration of the mark THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets and sweatshirts, the mark “THE HOUSE THAT JUICE BUILT” (with quotation marks) for mugs, and the design mark shown below for “T-shirts, baseball caps, hats, jackets and sweatshirts,” finding the first two marks likely to cause dilution-by-blurring of the Yankees’ registered mark THE HOUSE THAT RUTH BUILT and the third likely to dilute its “Top Hat” design mark. The Board declined to consider applicant’s parody defense because applicant asserted an intention to use its marks as source indicators, which is neither a noncommercial use nor a “fair use” exempted from a dilution claim. Fame: Applicant conceded that opposer’s Top Hat logo is distinctive, and the Board found the mark to be famous for dilution purposes. Applicant also conceded that THE HOUSE THAT RUTH BUILT is famous as referring to Yankee Stadium, but contended that it is not famous as a mark. The Board, however, found that the Yankees’ “use of its stadium … since the 1920s, has resulted in widespread recognition of that mark in association with Opposer’s baseball services.” Dilution or Not?: the Board ruled that Applicant’s design mark “would impair the distinctiveness of Opposer’s top hat design marks and would not constitute a non-source-indicating fair use parody.” Its analysis was similar for THE HOUSE THAT RUTH BUILT.

Ava Ruha Corporation dba Mother’s Market & Kitchen v. Mother’s Nutritional Center, Inc., 113 USPQ2d 1575 (TTAB 2015) [precedential] [TTABlogged here]. In this consolidated cancellation proceeding involving allegations of likelihood of confusion, dilution, and fraud, the parties filed cross-motions for summary judgment on respondent’s affirmative defense of laches. Because laches is not an available defense to a fraud claim, the Board considered laches only with respect to the dilution and likelihood of confusion claims. In order to establish the defense of laches, a party must show undue or unreasonable delay by the other party in asserting its rights, and prejudice resulting from the delay. The Board found the period of delay to be just over three years and two months, a length of delay that “could support a defense of laches.” Petitioner claimed that its delay was excusable due to Respondent’s “progressive encroachment,” but its evidence failed to raise a genuine issue of fact in that regard. The Board concluded that laches barred petitioner’s dilution claim, but as to likelihood of confusion a genuine issue of material fact as to whether confusion was inevitable precluded summary judgment. The Board ordered that the proceeding be resumed on the issues of fraud and likelihood of confusion, with Petitioner having the burden to prove inevitable confusion lest the Section 2(d) claim be barred by laches.

Joshua Domond v. 37.37, Inc., 113 USPQ2d 1264 (TTAB 2015) [precedential] [TTABlogged here]. In this cancellation proceeding challenging a registration for the mark BEAUTIFUL PEOPLE for various clothing items, Petitioner Joshua Domond served 872 requests for admission, 247 document requests, and 26 interrogatories in the first two days of the discovery period. Respondent 37.37, Inc. moved for a protective order under Fed. R. Civ. P. 26(c), requesting that the Board limit the discovery items to a reasonable number. The Board found the discovery requests to be “excessive, unduly burdensome and harassing in number and content” when viewed in light of the issues raised in the proceeding, and it granted the motion, limiting the total number of discovery requests to 150, absent prior Board review and approval. Petitioner alleged fraud, abandonment, and likelihood of confusion, and claimed that the challenged registration was void ab initio because respondent’s specimen failed to show use in commerce. The Board pointed out that while parties to a proceeding are generally allowed to seek discovery as they deem necessary, they are expected to take into account the principles of proportionality so that the volume is not harassing or oppressive, and they are expected to consider the scope of the requests as well as to confer in good faith so as to minimize the need for motions. The Board granted the motion for a protective order, and it warned petitioner that further uncooperative or harassing behavior may result in the imposition of sanctions, and possibly entry of judgment.

INTS It Is Not The Same, GmbH v. Disidual Clothing, LLC, Opposition No. 91212768 (March 28, 2015) [not precedential] [TTABlogged here]. The Board denied a petition to disqualify counsel for Opposer INTS, ruling that, although the attorney had signed and verified certain documents pursuant to a power of attorney from opposer, he was not the sole source for information regarding those documents and therefore was not a "necessary witness." Oppposer's counsel signed and filed applications, statements of use, renewals, and/or declarations of use and incontestability, in connection with opposer's pleaded registrations, pursuant to a Power of Attorney from opposer. Section 11.307(a) of the USPTO Rules of Professional Conduct indicates when a "practitioner for a party" who may become a witness in a USPTO proceeding should be disqualified. The first question was whether opposer's attorney was a "necessary witness," i.e., whether "no other person is available to testify in his place." Here, there was no showing that opposer's counsel alone would need to testify to the contents of the documents he signed. "Evidence and information as to the contents of those submissions can be found elsewhere." The Board noted, "[i]n passing, a policy of disqualifying an attorney for signing a declaration on behalf of his client, especially where it is permitted by the Trademark Rules of Practice, without anything more, would have an undesired consequence of rendering many attorneys practicing before the Board eligible for disqualification."

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Text Copyright John L. Welch 2016.


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